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Supreme Court of Denmark

Provisional injunction not issued as trade mark infringement was not proven on a balance of probabilities 

Case no. 173/2008
Judment 13 October 2009
 HE-House A/S and HE-Biler represented by Henning Mærsk-Møller (HE)

vs

Skandinavisk Motor Co. A/S (SMC)

There was so much doubt as to the interpretation of the Danish Trade Marks Act (the Trade Marks Directive) that trade mark infringement could not be proven on a balance of probabilities in a provisional injunction case.
SMC has the Danish trade mark rights to the word mark Skoda as well as a number of other Skoda trade marks. HE had been an authorised Skoda dealer for a number of years. When the distribution agreement expired, HE continued selling and repairing Skoda cars as an unauthorised dealer and used the Skoda trade marks for different purposes. Among other things, HE registered “Skoda” and other Skoda trade marks as search words in search engines and lookup tools on the Internet in order for advertisements for HE to be displayed in the search results. SMC sought a provisional injunction against, among other things, this use of SMC’s trade marks. However, the Probate Court did not issue a provisional injunction. This decision was brought before the High Court which then issued a provisional injunction.
The main issue before the Supreme Court was whether HE’s registration of SMC’s trade marks as search words for advertising purposes on the Internet amounted to an infringement of such trade marks.
HE primarily contested that this was use “in the course of trade” pursuant to S. 4 of the Trade Marks Act. Secondly, HE argued that the use of SMC's trade marks was permitted under S. 5(iii) of the Trade Marks Act.
The Supreme Court found that the conditions for issuing a provisional injunction against HE’s registration of SMC’s trade marks as search words in search engines and lookup tools on the Internet had not been fulfilled. Among other things, the Supreme Court declared that the issue of whether such registration of search words infringes SMC’s trade marks must be resolved on the basis of S. 4 and S. 5(iii) of the Trade Marks Act which implements the corresponding provisions in Article 5 and Article 6(1)(c) of the EU's Trade Marks Directive. Consequently, this is a matter of interpretation which must be settled by the European Court of Justice, and cases concerning the first issue are pending. The Supreme Court found no basis for staying the provisional injunction case pending the judgments from the European Court of Justice in these cases and/or with a view to bringing issues before the Court of Justice, as this would not be in conformity with the nature of a provisional injunction as interlocutory relief. Thus, the Supreme Court declared that there was so much uncertainty as to the interpretation of S. 4 and S. 5(iii) of the Trade Marks Act (Article 5 and Article 6(1)(c) of the Directive) that it had not been proven on a balance of probabilities that HE had infringed SMC’s trade marks by registering them as search words. In addition, it had not been proven on a balance of probabilities that HE had contravened S. 1 of the Trade Marks Act. (Dissenting opinion).
The Supreme Court, thus, reversed the ruling of the High Court in this respect.

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